First-instance case number: (2018) Hu 0115 Min Chu No.17008
In order to put an end to the unstable legal state brought about by the infringement warning of the obligee, if the obligee has not started the dispute resolution procedure within a reasonable period after receiving the infringement warning with explicit content, and the legitimate rights and interests of the warned person are damaged, he can file a lawsuit to confirm non-infringement. Suppose the obligee asks the warned person to withdraw the trademark registration application and stop trademark infringement based on the trademark infringement warning It only challenges the warned person's trademark registration to the national trademark registration examination institution, but fails to submit the trademark infringement to the dispute resolution institution. In that case, the registration objection does not constitute the reason for blocking the lawsuit of trademark confirmation of non-infringement.
Case introduction
Plaintiff: Shanghai Ant World Investment Management Co., Ltd. (referred to as Ant Company)
Defendant: Marriott Universal Picture (Marriott Company for short)
Ant Company has a cafe named "ANTSCOFFEE" on the third floor of Babaiban Building. The cafe uses an ant graphic trademark, which contains the word "ac" on the tentacles of ants' heads and is slightly different from the trademark No.21009044 owned by Ant Company. On November 13, 2013, Marriott Company applied to the Trademark Office for trademarks No.13533057 and No.13533058, and the designated services were the 43rd category, including hotels, which were approved and registered on October 21, 2015. On December 5, 2017, Marriott Company sent a lawyer's letter to Ant Company, saying that the element "ac" in the trademark used by the plaintiff is the same in pronunciation and meaning as its registered ac series trademark, and its appearance is similar, which is easy to cause market confusion, and requires the plaintiff to stop using the trademark containing the element "AC".
Ant Company believes that its trademarks and that of Marriott Company are used in different and dissimilar services, and the trademarks themselves are different and dissimilar. The trademarks of Marriott Company are not well-known in China, which is not enough to cause confusion. The infringement warning letter from Marriott Company leads to the uncertainty of whether Ant Company can use the trademark, which directly affects the business behavior of Ant Company. Therefore, Ant Company sent a reminder letter to Marriott Company on January 9, 2018, requesting Marriott Company to send a letter to cancel its infringement warning within one month from the date of receiving the letter or bring a civil lawsuit to the court. However, after receiving the letter, Marriott Company did not sue within the specified time limit and did not withdraw the infringement warning, so Ant Company filed a lawsuit to confirm non-infringement with Shanghai Pudong New Area People's Court.
After trial, the People's Court of Pudong New Area of Shanghai held that the plaintiff Ant Company's lawsuit of confirming non-infringement, in this case, met the conditions for the prosecution:
Firstly, the defendant's letter from Marriott Company clearly requires the plaintiff to perform two acts: to withdraw the trademark registration and to stop using the alleged infringing trademark in related services. Withdrawal of trademark registration is from the perspective of trademark administrative authority, which solves the problem of whether a trademark can be registered and obtain exclusive use rights; To stop "using" the accused infringing trademark is to solve the problem of whether the accused infringing trademark can be used continuously, from the angle of civil tort liability. Moreover, the defendant is slack on exercise the right to appeal to the court, which makes the legal relationship of whether the plaintiff's behavior infringes the trademark rights of the defendant unclear. This uncertain state is likely to affect the plaintiff's future production and operation, and cause the damage to its interests. Therefore, it is necessary for the plaintiff to file a lawsuit to confirm non-infringement in order to end the uncertain legal relationship and ensure its normal business activities in the future. The plaintiff's lawsuit of confirming non-infringement in this case meets the conditions of prosecution.
Secondly, compared with the defendant's trademarks No.13533057 and No.13533058, the plaintiff's trademark is a combination of graphics and letters. Overall, the trademark is similar to the ant shape, with its head protruding and enlarged. Among them, the left eye of ant's head is English lowercase letter "A", and the combination of the right eye and ant's body is the English word coffee, which directly indicates that the range of goods or services used by the trademark is coffee, even though the two eyes of the ant's head are indeed lowercase letters ac. However, ordinary consumers’ attention, ‘ac’ will not be combined as an English abbreviation, but will be regarded as two eyes of ants, and C will be combined with the attached ‘offee’ to become the English word of coffee. The defendant's trademark is a combination of pure letters, "AC" is a combination of two letters, which has no specific meaning and is not the abbreviation of common vocabulary. "HOTEL" indicates that the service scope of using the trademark is hotels. Compare the two trademarks, it is easy to distinguish the differences in the scope of goods or services only from English words, not to mention the significant parts of the two trademarks, one is the pattern modeling of ants' heads, and the other is pure letter combination. Therefore, the two trademarks are different and not similar. The plaintiff's use of the logo does not constitute an infringement of the defendant's registered trademark.
In summary, the court ruled in the first instance: confirm that Ant Company does not infringe the exclusive right to use the registered trademark of Marriott Company; Universal Picture City, Marriott paid a reasonable fee of 150,000 yuan for ant company's rights protection expenditure; Reject the remaining claims of Ant Company. After the first-instance judgment in this case, neither party appealed.
Typical meaning
The action of confirming non-infringement is to regulate the new cases of abuse of rights. In this case, the defendant is a world-famous enterprise in the hotel industry, which spamming infringement warning letters and was slack to sue in court. Although the plaintiff, in this case, is a small and micro private enterprise in China, it actively responded to the commercial threats of the defendant and took the initiative to defend its rights, which was supported by the court according to law. After the court judgment came into effect, the defendant also took the initiative to perform compensation. Through this case’s judgment, the court made clear the acceptance conditions and examination standards of trademark confirmation non-infringement, which is conducive to ending the unstable state of legal relations as soon as possible and maintaining stable market order and a business environment ruled by law.
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